Filing a U.S. Patent Application
Assuming you have decided to pursue a nonprovisional utility patent, the following steps describe the typical process.
When you contact us to discuss a potential attorney/client relationship, we will first conduct a conflicts check.
The conflicts check identifies any conflicts of interest between you and any previous clients that we have represented. Conflicts are rare, but if a conflict exists, then we typically cannot represent you.
If there are no conflicts, we will send you an engagement letter to review and sign that describes the terms of our relationship. Most attorneys require a pre-payment of fees (often referred to as a "retainer"), which is an amount of money paid up front at the time the attorney is "retained". Abraham Lincoln once said that a retainer lets the the client know that he has an attorney and the attorney knows that he has a client. Because we prefer flat fees, we generally agree on a fee up front and ask that you pre-pay the fee. Our fees are gladly refunded if for any reason our relationship terminates before we have performed any work for you.
Invention Disclosure Form
We usually request that you complete an invention disclosure form unless you have already prepared a similar document. The purpose of the invention disclosure form is to prepare the attorney for the disclosure meeting by:
- providing the attorney with enough information to become familiar with the technology area of the invention,
- providing a brief initial understanding of the invention, and
- allowing the attorney to prepare questions for areas where more details about the function of the invention are needed. If you have already created a short write up of the invention (2-3 pages), this is usually sufficient to serve as the invention disclosure form.
This step is typically performed before discussing the invention with our attorneys. However, if you need help identifying the features of a product that might be patentable, we can help in a more extended disclosure meeting.
The disclosure meeting is designed to explain the operation of the invention to the attorney, as well as provide an opportunity for the attorney to gather certain administrative information. A patent application has two major requirements regarding the content that it must contain:
- the application must provide a sufficient description so that a person of ordinary skill in the field of technology of the invention could readily build the invention, and
- if there is a particular “best mode” of practicing the invention, then such details must be disclosed.
Based on the attorney’s knowledge of the technology area of the invention and the nature of the improvement over existing technology, gathering this information generally takes between 30 minutes and two hours. In addition, the attorney will gather administrative information such as the identity of the inventors, any prior art of which the inventors are aware, any activities that could limit or prevent patent protection (past public disclosures of the invention, upcoming disclosures, and so forth), and expectations as to the time for preparation of the application.
A patent application is both a technical document and a complex legal document.
Drafting Patent Application
Following the disclosure meeting, the attorney drafts the patent application. In some cases, the inventors may be asked to provide materials that can be helpful in drafting the application, such as developer specifications, screenshots, and marketing materials describing the invention. After completing a draft of the patent application, the attorney sends the draft to the inventors for review.
Review Draft Patent Application
The inventors review the draft patent application for technical correctness and completeness, and provide feedback to the attorney about any desired changes. The attorney then makes the changes and provides updated drafts until the content of the application is finalized. The attorney may also prepare formal documents for the application required by the Patent Office (such as an inventor declaration, application data sheet, and assignment giving ownership of the invention to a company or other entity), and sends these to the inventors to sign. In some cases the application is filed without formal papers for a small additional fee to the Patent Office and the formal papers are filed later. This can be useful if an inventor is unreachable or if other issues delay completion of the formal papers.
File Final Patent Application
After the application is finalized, the attorney officially files the application with the Patent Office and pays the Patent Office application fees. The Patent Office charges a base fee that varies based on whether the inventor is associated with a small entity (e.g., less than 500 employees) or a large entity. The Patent Office also charges additional fees for certain special situations such as for applications with more than 20 claims or applications longer than 100 pages .
Receive Office Action(s)
After the application is filed it is assigned to an Examiner. The Examiner begins the examination process by determining the type of search that needs to be performed and performing a search. Years may pass between the filing of the application and the beginning of examination (two years is typical for software and electrical inventions). In some cases, the Examiner determines that the application contains more than one invention that would require a separate search for each invention. In such cases the Examiner issues a Restriction Requirement and asks the inventor to select one invention for initial examination. The inventor can pursue the other inventions later in additional applications split from the first application (called divisional applications) with the payment of an additional Patent Office application fee. The Examiner’s search identifies the prior art that the Examiner believes is most closely related to the invention. In only about 10% of applications, the Examiner does not find any close prior art and allows the case at the outset. In the other 90% of applications, the Examiner sends an Office Action that identifies the prior art and requests a response describing why the patent should be allowed over the prior art.
Our attorneys discuss Office Actions with the inventor as needed and prepare an appropriate response. In some cases the claims are modified to clarify the invention’s differences from the prior art. In other cases arguments are made that explain that the Examiner’s interpretation of the prior art is incorrect. Several cycles of Office Actions and responses may take place. Typically, the Examiner is persuaded by modifications to the claims and arguments presented and allows the patent application to issue as a patent. In some cases the inventor and Examiner do not agree and our attorneys conduct an appeal with the Patent Office’s Board of Patent Appeals and Interferences. In a small number of cases the prior art found by the Examiner cannot be overcome and the inventor abandons the application.
Receive Issued Patent
After the above Office Action procedure, the Patent Office sends a Notice of Allowance, and the inventor pays an issue fee to the Patent Office for the patent to issue. The inventor then receives a patent with the official Patent Office seal and may begin excluding competitors and/or licensing the patent. The owner of the patent must pay maintenance fees 3½, 7½ and 11½ years after grant of the patent.